Mapping the evolving legal landscape

gTLD update: .adult and .porn on the horizon

The Internet was in a tizzy back in 2011 when ICM Registry began selling .xxx domain names for use by adult entertainment providers, selling nearly 250,000 addresses and netting more than $50 million. Just last year the registry sold sex.xxx for $3 million dollars, the highest price paid for a non-dot-com address. Which leads us to wonder if the addition of .adult and .porn will generate the same concerns and profits. ICM Registry has set aside nearly 1,000 domain names such as sex.porn, hoping to replicate the success they had with .xxx. But the concern for many trademark holders, as was the case with .xxx, is how to protect their brands during the launch of .adult and .porn?

ICM Registry has set up an elaborate registration period, in effect now through the launch to the general public, which is expected in early June. The two gTLDs opened their Sunrise periods March 2, which will give trademark holders who are registered in the Trademark Clearinghouse (TMCH) the opportunity to secure their registered trademark within the new top level domains. Domains names are available on a first-come, first-served basis to validated marks in the TMCH. The cost of registration fees will be the standard registration fees without any additional sunrise application fees.

Once the Sunrise period has closed, .adult and .porn will launch a Sunrise B period from April 6 to April 30 for .xxx Sunrise B applicants. Sunrise B applicants consist of trademark owners who participated in the .xxx Sunrise B Program and are given a priority option to register matching marks in .adult and .porn before the gTLDs become available to the general public. Following these periods, the gTLDs will open a Domain Matching Program set for May 6 to May 31. During this time, any .xxx registrants can secure available second level domains in .adult and .porn for which they hold a valid .xxx registration. To participate in this phase, a .xxx name must be registered by April 30. Once completed, general availability will begin June 4.

A strategy for trademark holders

Similar to the launch of .xxx and, more recently, the onslaught of new gTLDs, it is important for all trademark holders to create and implement a strong protection strategy to prevent unauthorized and potentially disparaging use of their trademarks.

Trademark holders should first assess their trademark portfolio and register their most valuable registered trademarks in the TMCH which has been established by ICANN. Registration in the TMCH allows trademark holders to participate in established protection mechanisms, such as sunrise and trademark claims services.

Sunrise Services are an initial period that must last at least 30 days before domain names are offered to the general public. Each new gTLD must hold a sunrise period that allows trademark owners to pre-register and safeguard the domain names that match their marks.

Trademark Claims Services come into effect after the sunrise period has concluded. ICANN also mandates these services for all new gTLDs. Trademark claims services provide for two notifications to warn domain name registrants and trademark holders of possible infringements. This service immediately alerts the trademark holder of possible infringement so the company can take appropriate action.

For trademark holders looking to combat use of .adult and .porn with any of their marks, we recommend registration of the federally and internationally registered trademarks in the TMCH as soon as possible. Once the record is verified by the TMCH, the holder will be provided a coded signed mark data (SMD) file, which will allow them to register second-level domains during the sunrise period. If a trademark holder is unable to register a trademark in the TMCH, either because of a time constraints or because the mark is not registered federally or internationally, trademark holders can still secure a domain in .adult and .porn before the gTLDs are launched to the general public. The holder can register a .xxx domain by April 30 and participate in the Domain Matching Program offered by the registry of .adult and .porn. During this time, any .xxx registrants can secure available second level domains in .adult and .porn for which they hold a valid .xxx registration. If the above options are not viable, a trademark holder could still register a domain in .adult or .porn during the general availability phase if the domain is still available.

Trademark holders should seriously consider obtaining a registration in .adult and .porn for their most valuable brands as soon as possible if they wish to prevent use of their trademarks with the .adult and .porn domains.

Not interested in .adult and .porn, what about these new gTLDs?

Since our last gTLD update, ICANN has delegated for 45 new gTLDs. The following gTLDs have received the green light to launch:

.marriott

.lotte

.one

.jcb

.barclaycard

.hermes

.dabur

.design

.barclays

.hangout

.temasek

.goog

.ifm

.淡马锡 “Temasek”

.dclk

.kyoto

.ntt

.chat

.toshiba

.style

.canon

.bingo

.tennis

.nico

.saxo

.apartments

.gdn

.cbn

.yodobashi

.school

.goldpoint

.football

.fans

.casino

.courses

.boats

.study

.sucks

.政府 “government”

.maif

.epson

.java

.leclerc

.goo

.oracle

These gTLDs are set to launch later this month:

gTLD

Sunrise opens

.one

03/04/2015

.style

03/10/2015

.tennis

03/10/2015

.bingo

03/10/2015

.chat

03/10/2015

.college

03/17/2015

.ong

03/17/2015

.apartments

03/17/2015

.irish

03/17/2015

.ngo

03/17/2015

.school

03/24/2015

.football

03/24/2015

.casino

03/24/2015

And these are in sunrise now:

gTLD

Sunrise closes

.tirol

03/04/2015

.poker

03/07/2015

.osaka

03/11/2015

.firmdale

03/13/2015

.doosan

03/15/2015

.samsung

03/15/2015

.pharmacy

03/16/2015

.alsace

03/20/2015

.tires

03/21/2015

.flowers

03/27/2015

.wedding

03/27/2015

.adult

04/01/2015

.porn

04/01/2015

.garden

04/06/2015

.fashion

04/06/2015

.lat

04/17/2015

.fit

04/20/2015

.video

04/25/2015

.sale

04/25/2015

.design

04/28/2015

These gTLDs have concluded their sunrise periods and will soon be moving on to general availability:

.space

.rip

.band

.energy

.delivery

.frl

.sydney

.lgbt

.green

.party

.cricket

.science

.voto

.vote

.nrw

.legal

.coach

.money

.memorial

If any of these gTLDs could be of value to you or your brand, or are otherwise of concern — remember that as a registered agent of ICANN’s Trademark Clearinghouse, we can help develop and implement your gTLD strategy. For more information, read Porter Wright’s law alert about gTLDs.

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